WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PM-International AG v. Eurobox Ltd. and OOO Aizek
Case No. D2007-1496
1. The Parties
The Complainant is PM- International AG, Luxemburg, represented by Rau, Schneck & Hübner, Germany.
The Respondents are Eurobox Ltd., St. Petersburg, Russian Federation (“First Respondent”), and OOO Aizek, St. Petersburg, Russian Federation (“Second Respondent”), (jointly, the “Respondents”).
2. The Domain Name and Registrar
The disputed domain name <pminternational.com> (the “Domain Name”) is registered with NICCO Ltd., Russian Federation (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2007. On October 24, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. After two reminders of the Center’s request, on November 16, 2007, the Registrar transmitted by email to the Center its verification response, whereby it informed the Center that the registrant of the Domain Name is the Second Respondent and provided its contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 21, 2007, whereby Complainant named Second Respondent as an additional Respondent in the proceeding. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified, in both English and Russian languages, First Respondent and Second Respondent of the Complaint, and the proceedings commenced on November 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2007.
On November 30, 2007, First Respondent filed with the Center a statement in Russian , in which it claimed not to be a proper respondent in the administrative proceeding, as it was only acting as a proxy service provider to the Second Respondent, and insisted that Russian should be the language of the proceedings.
On November 30, 2007, Second Respondent made a submission also in Russian to the Center whereby it claimed that the administrative proceeding should be carried out in the Russian language, and that it may commence only after the submission by Complainant of a Complaint translated in Russian.
On December 5, 2007, the Center responded to the submissions of both Respondents dated November 30, 2007, and informed them of its decision to accept the Complaint as filed in English, to accept a Response in either English or Russian, and to appoint a Panel familiar with both languages.
On December 4, 2007, Complainant made a submission maintaining its request for English to be the language of proceedings.
First Respondent did not file a formal Response. Second Respondent filed its Response with the Center on December 13, 2007.
On December 21, 2007, Complainant filed a supplemental submission.
The Center appointed Assen Alexiev as the sole panelist in this matter on January 8, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
In accordance with Rules, Paragraph 10 and 12, and to ensure that both parties are treated with equality and each party is given a fair opportunity to present its case, the Panel issued its Procedural Order No.1, whereby it accepted Complainant’s supplemental filing, and invited all parties to submit further statements.
In relation to the language of the administrative proceeding, the Panel considered the following:
Although vigorously rejecting the request of Complainant that English be the language of proceedings, Second Respondent actually neither claimed, nor showed any apparent language difficulties in acquainting with the Complaint and with commenting on it, on the Policy, the Rules, and the various prior decisions issued under the Policy. Second Respondent did not request any extension of the time limit for submission of its Response due to language difficulties. As contended by itself, Second Respondent chose two domain names consisting of English words for the purposes of its project related to project management, which leads to the conclusion that Second Respondent sought to attract the attention of English-speaking customers.
Therefore, the Panel is of the opinion that Second Respondent has sufficient command of the English language in order to understand the nature of the proceeding and the contentions of Complainant, and on this basis, to formulate and to present Respondent’s case in the Russian language. The Response submitted in Russian is accepted and taken into account by the Panel, as it is familiar with both English and Russian languages.
As to First Respondent, it is notable that its own corporate website exists only in the English language (as evident from First Respondent’s own submission dated January 22, 2008), and its services are offered there in this language. Therefore, it is likely that First Respondent conducts its business in English. To do so, it presumably has sufficient command of that language.
Neither of the parties would appear to be put at a disadvantage if English is chosen as the language of the proceedings, as it is not the native language of any of them, while all of them apparently understand it. A request to the Complainant to submit its Complaint in the Russian language would cause additional and unnecessary expense and delay of the proceedings.
On this basis, and on the grounds of Rules, Paragraph 11(a), and Rules, Paragraph 10(a), (b) and (c), the Panel decided that the language of the administrative proceeding be English.
In relation to the proper Respondent in the administrative proceeding, the Panel considered the following:
As alleged by First Respondent, its involvement with the Domain Name started at the end of September 2006, through the provision of proxy services to Tradenames Ltd. (“Tradenames”). Then, in June 2007, First Respondent claims to have continued to act as proxy service provider, this time for Second Respondent. First Respondent chose not to submit any other details or, indeed, any evidence of its contractual relations with either Tradenames or Second Respondent regarding the Domain Name. Second Respondent did not submit any evidence for its contractual relations with First Respondent either.
Complainant’s correspondence in January 2007 was held with Tradenames directly, and the latter did not negotiate on its own behalf, but purported to transmit to Complainant the views and positions of another (unnamed) Domain Name holder in respect of the possible transfer of the Domain Name.
As contended by Complainant, First Respondent never answered Complainant’s letter to First Respondent dated February 7, 2007. Thus, First Respondent apparently did not then deny that it was the holder of the Domain Name at the time.
As shown by Complainant, First Respondent was listed as holder of the Domain Name at the time the Complaint was filed. It took more than three weeks for the Registrar to respond to the Center’s request for verification in respect of the Domain Name, and, as confirmed by First Respondent itself, it transferred the Domain Name to Second Respondent only after becoming aware that the Complaint was filed – i.e., during this same three-week period. Therefore, at the time Complaint was filed and the Request for registrar verification was sent, it was First Respondent that was listed as registrant of the Domain Name. This finding is supported by the Whois printout in respect of the Domain Name, which shows that the record was last updated on November 15, 2007.
Thus, the available evidence in the case does not prove First Respondent’s allegations, and it is only proven in this administrative proceeding that First Respondent was the registrant of the Domain Name in the period October 2006 – November 15, 2007, and in this capacity, a party that should be responsible for the use of the Domain Name in this period.
As discussed below, the Panel is inclined to accept that each of Respondents has kept unclear its actual location and what has actually happened in respect of the Domain Name. To the Panel’s view, this justifies the conclusion that the responsibility of each Respondent for the registration and use of the Domain Name cannot be distinguished from the responsibility of the other Respondent, and their conduct should be analyzed jointly for the purposes of the Panel’s findings under the Policy.
Therefore, the Panel decided that First Respondent is a proper Respondent in the administrative proceeding.
4. Factual Background
Complainant is owner of the following registered trademarks:
- PM-INTERNATIONAL, Benelux trademark with reg. No. 0741449, with application date November 21, 2003, registered for goods and services in International classes 3, 5, and 29;
- PM-INTERNATIONAL, International Registration No. 828734, with application date April 1, 2004, registered for the territories of 28 countries for goods and services in International classes 3, 5, and 29;
- PM-INTERNATIIONAL, Canadian trademark with reg. No. TMA 647492, with application date February 23, 2004, registered for the same goods and services as the Benelux trademark mentioned above; and
- PM-INTERNATIONAL, Hong Kong trademark with reg. No. 300172070, application date March 5, 2004, registered for goods and services in International classes 3, 5, and 29.
The Domain Name was first registered on June 9, 1997, acquired by or in the name of First Respondent at least as early as October 2006, and subsequently registered in the name of Second Respondent.
5. Parties’ Contentions
Complainant, PM-International AG was registered as a company in Luxemburg on February 10, 1994. It is a leading producer and distributor of nutritional supplements, active worldwide and doing business in Russia for a considerable time. Complainant has many affiliates with the same name, registered in other countries. Its Russian affiliate, PM-International AG Russland, was founded on July 5, 1996.
Complainant contends that the portion “pminternational” of the Domain Name is almost identical to the trademarks PM-INTERNATIONAL of Complainant. The use of hyphens in domain names is arbitrary, so consumers will not be able to distinguish between the sequence “pminternational” and the trademarks PM-INTERNATIONAL of Complainant. Second Respondent’s argumentation with regard to the elements “pm” and “international” of the Domain Name disregards that “pminternational” is a unitary term and has therefore to be evaluated as a whole. Neither of Respondents has filed any arguments showing that the term “pminternational” is widely used in a descriptive sense.
Complainant states that all grounds, on which the Complaint is based, are equally valid for both Respondents.
According to Complainant, Respondents have not used the Domain Name in connection with a bona fide offering of goods or services. A printout of the website at the Domain Name as of January 29, 2007 shows “pminternational.com: this domain is for sale” in the header, therefore, the Domain Name was not intended to be used fairly. The printout from August 29, 2007 shows no contents of the respective Internet site at all. To the knowledge of the Complainant, Respondents have never been commonly known by the Domain Name, neither is any of Respondents making a legitimate non-commercial or fair use of the Domain Name.
On January 29, 2007, Complainant exchanged email correspondence with tradenames.com concerning the sale of the Domain Name. Its offer for the purchase of the Domain Name was rejected, and tradenames.com mentioned a price in the range of EUR 15,000. Therefore, Respondents seem to be aware of the high value of the Domain Name which can only be based on the interest of the Complainant or its competitors.
As claimed by Complainant, Respondents have used Complainant’s trademark FITLINE on the website at the Domain Name on January 29, 2007. This shows that the Respondents were aware of Complainant and its trademark rights but chose to use them in order to at least attract, for commercial gain, Internet users to the website at the Domain Name by creating a likelihood of confusion with Complainant’s trademarks.
First Respondent was listed as holder of the Domain Name at the time the Complaint was filed. It was First Respondent who received the letter of Complainant dated February 7, 2007, which was submitted to the Center with the Response of Second Respondent. First Respondent never answered this letter, thus not denying that it was holder of the Domain Name.
According to the Complainant, as the decision will only concern the Domain Name, no disadvantages to First Respondent may result from the decision. However, First Respondent, should remain a party to the proceedings in case the relations between First Respondent and Second Respondent include some terms with regard to the Domain Name not yet known to Complainant or to the Center.
Complainant requests that the Domain Name be transferred to the Complainant.
First Respondent did not submit a formal Response. In its communications with the Center, it always denied its actual ownership of the Domain Name, and claimed to have always acted on behalf of third parties – first for Tradenames, and then – for the Second Respondent. In support of its allegations it chose to submit as evidence only a printout of its corporate website at “www.eurobox.com”.
Second Respondent alleges that Complainant’s trademarks lack distinctiveness. The second part – “international” is generic and cannot be associated with Complainant only. The first part – “PM”, cannot be regarded as specific and exclusively related to Complainant. It has several widely used meanings, as “post meridiem”, “prime minister”, “pentameter”, etc. One of these meanings (directly related to Second Respondent’s activities) is “Project Management”.
Second Respondent states that Complainant has not proven the bad faith of Second Respondent. All arguments of Complainant are related to third parties. Second Respondent acquired the Domain Name in June 2007, while the evidence submitted by Complainant relates to a preceding period, and, as stated by Complainant itself, to the “former owner” of the Domain Name.
Further, Second Respondent alleges that the website at the Domain Name as of August 28, 2007 had no content, which shows that Second Respondent had no intent to sell or otherwise extract a gain through the sale of the Domain Name to Complainant. Second Respondent never offered the Domain Name for sale, as it was itself interested in using it for its own business. The Domain Name was first registered several years before Complainant acquired rights in its trademarks, so the registration of the Domain Name was not made with the intent to sell, rent or otherwise transfer the Domain Name to Complainant. Second Respondent acquired the Domain Name with the purpose to use it for its activities.
There is no association between the Domain Name and Second Respondent only because second Respondent has not started an active use of the Domain Name yet, and is only in preparation for such use, which is the reason for the lack of content of the website at the Domain Name.
Second Respondent claims to have a legitimate interest in using the Domain Name, before all, because of the wide use of the distinctive part of the Domain Name. The sphere of interests of Second Respondent is in the domain of provision of project management services. Currently, the most widely used term for the provision of such services is “project management”, which is often used in its abbreviated form “pm”.
There is a practice under the Policy in relation to generic words, in that respondents are found to have a legitimate interest in domain names incorporating generic words, if they describe their business or if the respective respondent extracts benefit of the generic meaning of the word.
The Domain Name was registered on June 9, 1997 - prior to the registration of Complainant’s trademarks, the earliest of which was registered on March 1, 2004. It was many times established in prior decisions under the Policy, that if the respective domain name was registered prior to the trademark, the domain name registrant could not be regarded as acting in bad faith, as it could not take into account non-existent trademark rights. Therefore, the bad faith of the registrant of the Domain Name is a priori excluded, and it has legitimate rights in the Domain Name. Consequently, Second Respondent has all reasons to believe that the previous owner of the Domain Name had legitimate rights in it at the moment of its transfer to Second Respondent, and that the right in the Domain Name is per se legitimate. Therefore, with the transfer of the Domain name to Second Respondent, it benefits from all the grounds for the legitimacy of the rights of the previous registrant.
According to Second Respondent, one of the aspects of its activities is the provision of services in relation to project management. In this respect, Second Respondent was planning to develop an Internet project that will enable it to reflect its activities and thus attract potential clients. In order to develop this project Second Respondent acquired on the secondary market the domain names <pminternational.com> and <project-system.com>, as most suitable for the purposes of this project. Second Respondent is making preparations for the creation of a website at the Domain Name, dedicated to Second Respondent’s services in the field of project management. Due to the short period from the acquisition of the Domain Name, Second Respondent does not have at its disposal many materials evidencing its preparation for the use of the Domain Name. However, Second Respondent found it possible to submit the Order of August 3, 2007 “On the development of the content and design of the pminternational.com website”. All these facts and documents undoubtedly proved that Second Respondent is making preparations for the use of the Domain Name for its non-commercial use in the future, and therefore evidence its rights and legitimate interests in the Domain Name.
Second Respondent claims that Complainant is using the Policy in an attempt at Reverse Domain Name Hijacking, on the following grounds:
1. The Domain Name was registered much earlier (about seven years) than Complainant’s trademarks, so the person who registered the Domain Name had no chance to guess that Complainant would acquire trademark rights. To the contrary, when choosing and registering its trademarks, Complainants could be perfectly aware that other persons were using similar signs in their activities. Therefore, Complainant was obliged either to accept the situation, or to seek a peaceful solution, for which, as evidenced by Complainant itself, there was a possibility.
2. In the beginning of 2007 there was a possibility for anyone to acquire the Domain Name. The evidence submitted by Complainant shows that it tried this possibility and communicated about a possible sale with the registrant of the Domain Name at the time.
3. Having equal chances with any third party to acquire the Domain Name, Complainant did not do this. Instead, Complainant chose to use the mechanism of the Policy in order to acquire the Domain Name. This is clear from the following communication by Complainant to First Respondent: “However, our client is prepared to acquire the domain “pminternational.com” for a consideration of US $1000 (one thousand). Please bear in mind that the fees for a domain dispute procedure at WIPO will only amount to US $1500” The statement leads to the conclusion that Complainant, using the Policy, submitted the Complaint not in order to protect its infringed rights, but to expropriate others’ property with the least expenses.
On these grounds, Second Respondent requests the Panel to deny the Complaint and to make a finding of Reverse Domain Name Hijacking.
6. Discussion and Findings
Pursuant to Policy, Paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Domain Name:
(i) That the Domain Name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the respondent has registered and is using the Domain Name in bad faith.
By Rules, Paragraph 5(b)(i), it is expected of a Respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to both Respondents, in compliance with Rules, Paragraph 2(a), and each of the Respondents was given a fair opportunity to present its case.
Therefore, the Panel reached its decision on the case on the basis of the contentions of the parties and the supporting evidence brought by them before the Panel.
A. Identical or Confusingly Similar
Complainant’s trademarks are duly registered for the territories of many jurisdictions. Therefore, they benefit from a presumption of validity and compliance with the legal requirements for their registration, including in respect of their distinctiveness for the products and services that they are used for.
As to the registration dates of the Complainant’s trademarks, the Panel notes that, in accordance with the established practice under the Policy, these dates are not taken into account for the purposes of the test of identity or confusing similarity. Therefore, the Panel will compare the Domain Name with the Complainant’s trademarks in order to reach its decision on the issue of identity or confusing similarity.
Complainant’s trademark PM-INTERNATIONAL consists exclusively of the letters “PM-International”.
As the top level domain name portion “.com” is not taken into account for the purposes of the test whether the Domain Name is identical or confusingly similar to a trademark, the relevant part of the Domain Name is the sequence “pminternational”. Comparing this sequence to Complainant’s trademarks, the Panel finds that the only differences between them are that the trademarks have capital letters “PM” and a hyphen between this part and “international”, while the Domain Name contains only lowercase letters and there is no hyphen between “pm” and “international”. In the Panel’s view, these differences are minor, and do not change the overall impression created by the Domain Name in comparison to the trademarks, as Internet users are likely to pay little attention to capital letters and hyphens or the lack thereof.
On these grounds, the Panel finds that the Domain Name is confusingly similar to Complainant’s trademarks.
B. Rights or Legitimate Interests
Complainant has contended that Respondents have no rights or legitimate interests in respect of the Domain Name, and that they are not commonly known by the Domain Name. Complainant has also claimed that Respondents have not intended to use, or actually used, the Domain Name in connection with a bona fide offering of goods or services, and that Respondents are not making a legitimate non-commercial or fair use of the Domain Name.
Thus, Complainant has established a prima facie case that Respondents lack rights or legitimate interests in the Domain Name.
It is well established that once Complainant makes out a prima facie case under Policy, paragraph 4(a)(ii), the burden shifts to Respondent to rebut the showing by providing evidence of its rights or legitimate interests in the Domain Name.
First Respondent has made no allegations on this issue and has claimed no rights or legitimate interests in the Domain Name.
Second Respondent has claimed that the Domain Name has a generic meaning and is in general use, so Respondent has a legitimate interest in it. The argument is that “international” is a generic term in general use, and that “pm” stands for “project management”, so the combination is generic itself. Notably, this argument of Respondent’s is focused on Complainant’s trademarks, and not on the Domain Name. However, a trademark is evaluated through its whole appearance, and not through its separation in parts. So, the analysis of Complainant’s trademark shows no grounds for acceptance of Second Respondent’s allegation, and there is no provided evidence to support a finding that the trademark is generic or in general use.
The Domain Name and the website at it are in no apparent way related to project management, international or otherwise. Second Respondent has provided no persuasive reasons why the Domain Name should be treated as generic or as being in general use. As stated above, being registered by Complainant as trademark, the Panel is prepared to accept the sequence “PM-International” as sufficiently distinctive and non-generic. Therefore, Second Respondent’s claim that the Domain Name is generic is not accepted, and (quite apart from the fact that it is apparently not being used in the asserted generic sense) can not serve as a basis of a finding of a legitimate interest of Second Respondent in the Domain Name.
Respondent has alleged that it was making preparations for the setting up of a website dedicated to its activities in the project management business. This allegation is not supported by evidence other than a Whois printout showing that Respondent has also registered the domain name <project-system.com>, and an internal Order by Second Respondent’s General Director for the commencement of the development of a website at the Domain Name. Respondent mentions that the domain names <project-system.com> and <pminternational.com> were of interest to it because they were related to project management services. The Panel finds no reasons why, if Second Respondent had started the preparation of a website at the Domain Name, it would not submit convincing evidence in this regard. If Respondent had started these preparations in August 2007, it should have already prepared certain documents, such as, at least, a basic concept of the website, describing its goals, structure and planned content and topics covered, and, importantly, the planned timetable for implementation of the project. In the Panel’s view, the submitted internal Order of August 3, 2007 is not convincing in this regard, as it contains no specific information on any of the above aspects, and, indeed, lacks certain requisites normally found in an order of any kind, such as the specific requirements to its addressee and the term for the implementation of the order. There is also no registration number of the order as one would expect in a company that properly keeps its records. In view of the alleged purchase of the Domain Name by Second Respondent for the considerable amount of 4,000 US Dollars, one would expect from Second Respondent to have no difficulty in supporting its story with more serious evidence. In addition, the Panel notes that Second Respondent has actually not submitted any evidence (which would normally be abundant) in support of its claim that it is in the business of project management.
Also, there is a contradiction in the allegations of Second Respondent, as it mentions its plans to create a website for the purposes of its business activities in the field of project management, and then it alleges that the website was planned to be non-commercial.
Therefore, in the lack of any evidence to the contrary, the Panel finds no reasons to accept Second Respondent’s allegation as to its purported preparations for the use of the Domain Name in relation to a website dedicated to its services in the field of project management.
This finding is further supported by the lack of any evidence that Second Respondent had any rights in the Domain Name prior to November 15, 2007. The submitted Domain Name Transfer agreement between Tradenames and Second Respondent, dated June 25, 2007, actually does not prove that a transfer was made, as it specifies that the transfer would take place only after the payment of the price, and there is no evidence that the price was paid or that the transfer agreement was otherwise performed. This is indirectly confirmed by Second Respondent, as it states that its rights in the Domain Name were acquired “not earlier” than on June 25, 2007, without ever specifying when these rights were actually acquired. Notably, this agreement specifies neither the addresses or any other details in respect of the parties, bank accounts, etc., nor is any exhibit evidencing the rights of the transferor to the Domain Name attached it, as one would expect in such an agreement. A party that is prepared to pay the amount of 4,000 US Dollars for a Domain Name would presumably request such evidence from the seller, and if the allegations of First Respondent are true, then this evidence would consist of at least the alleged proxy service agreement between Tradenames and First Respondent, as the Whois record itself would not prove the rights of Tradenames. Therefore, it is normal to expect that Second Respondent had acquired a copy of this agreement at the time the transfer agreement was executed. As Second Respondent has chosen not to submit it in this proceeding, it either does not exist, or it contains terms that are not favourable for Respondents’ case here.
As there is no evidence in the case file about the contractual relations between Tradenames and First Respondent in respect of the Domain Name, the Panel is left only with the Whois records in respect of the Domain Name showing that as of August 29, 2007, First Respondent was listed as its registrant, and the allegations of First Respondent, from which it follows that First Respondent continued to be listed as registrant of the Domain Name until November 15, 2007.
The Whois contact details provided by Second Respondent in respect of the two domain names registered by it, contain the same address as the one given in its Response, and it proved to be incorrect, as the hard copy of the Complaint sent to Second Respondent by the Center was returned by the courier due to insufficient address information. There is no explanation by Respondent of the reasons not to disclose its real address, although one would expect from a Respondent having rights and legitimate interests in respect of a domain name to provide plausible reasons as to why it hides its location. It is notable here that Respondents, when describing the role of First Respondent as a “domain by proxy” service provider, stated that in case of a dispute First Respondent discloses all identification data for the actual registrant of the respective domain name. If this is true, then there is no explanation why this information, as the address provided by First Respondent, both proved to be incorrect. In addition, these addresses being incorrect appears to contradict Second Respondent’s reasons for using the proxy services of First Respondent – if now the address of Second Respondent is incorrect, then why hide it through a proxy?
The website at the Domain Name as of January 2007, as evidenced by Complainant, is a commercial website containing links to various topics, and with a header stating “This domain is for sale”. The website contains also two links to “Fitline”, which, as proven by Complainant, is one of its trademarked products. The Panel is not convinced by First Respondent’s allegation that it was in no way related to the content of this website. There is no evidence that the website was set up and maintained without the knowledge and approval of First Respondent, as there is no evidence that another party was the beneficial owner of the Domain Name and took the decisions as to the content of the website associated to the Domain Name.
In the light of the above, the Panel finds Respondents’ claims unpersuasive, and in the Panel’s opinion, more likely than not pretextual. Therefore, Respondents are found to have no rights or legitimate interests in the Domain Name. The second element of the test, required under the Policy, paragraph (4)(a), is therefore established.
C. Registered and Used in Bad Faith
In the present proceeding, it appears that neither of Respondents did itself first register the Domain Name, rather, they are both its transferees. That is the reason why the doctrine of “extension” can be invoked here, that is, that the term “registration” extends beyond the original act of registration and covers subsequent acquisitions of the Domain Name. Thus, Policy, Paragraph 4(b)(i) specifically refers to circumstances in which the respondent has registered or has acquired a domain name, and there are prior Panel decisions in which it has been held more generally that “registration” extends to subsequent acts of acquisition. BWR Resources Ltd v. Waitomo Adventures Ltd., WIPO Case No. D2000-0861, Motorola, Inc. v. NewGate Internet, Inc. WIPO Case No. D2000-0079, and Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406. Therefore, the acquisition by a party of a domain name amounts to a new registration, and is evaluated for the purposes of the Policy by application of the same criteria. The application of this rule in the present proceeding results in the finding that Respondents cannot claim that a finding of bad faith is a priori excluded here as the Domain Name was registered years before Complainant’s trademarks. The actions of Respondents have to be evaluated in the light of the fact that, as of October 2006 (the date claimed by First Respondent as the beginning of its involvement with the Domain Name), Complainant had already registered its trademarks in many jurisdictions. Complainant has acquired trademark rights for its corporate name and trademark in many jurisdictions. It has been active in the last 15 years in many countries, including Russia.
Complainant’s letter to First Respondent dated February 7, 2007, was submitted to the Panel by Second Respondent, not by First Respondent. Second Respondent, while describing at length the reasons for its purported belief in the legitimacy and good faith of the previous registrant of the Domain Name, has chosen not to explain how this letter has affected its attitude towards the activities of the previous registrant of the Domain Name at the time Second Respondent acquired the Domain Name. If First Respondent has started to act as a proxy service provider to Second Respondent in June 2007, it is reasonable to expect that First Respondent would provide to Second Respondent this letter together with all other documents in its possession about the Domain Name from the outset of their relations, and not only after the Complaint was filed, as Second Respondent alleges.
In addition to the above, Second Respondent has alleged that First Respondent was providing proxy services to it, and in case of dispute First Respondent would immediately disclose the real registrant. What follows from this is that Second Respondent actually admits to have been aware of the Complaint at the time of the entry of the transfer in the records of Registrar in November 2007 (and indeed, this was never denied by Second Respondent).
It is therefore difficult to believe that Second Respondent, in taking his transfer of the Domain Name was unaware of these facts and that its acquisition of the Domain Name was made in good faith. More likely than not, Second Respondent knew of the dispute with Complainant.
As discussed above in relation to the issue of rights and legitimate interests, the Panel is of the opinion that Second Respondent’s allegations as to the timing, the reasons, and the way of transfer of the Domain Name to it, are not convincing. The only proven fact in this regard is that Second Respondent was listed as registrant of the Domain Name only after the transmission by the Center of the Acknowledgement of Receipt of Complaint to Complainant and to First Respondent.
Although claiming to have been engaged in the legitimate business of a proxy service provider, First Respondent has provided incorrect contact details to the Registrar of the Domain Name and has not provided a correct address to the Center. Notably, the same incorrect contact details of First Respondent are shown on its corporate website. First Respondent has not provided the correct address of Second Respondent either, although stating that this was automatically being done in case of a dispute. As discussed in many prior decisions under the Policy, the provision of incorrect contact details by a domain name registrant may in itself be evidence of bad faith.
Also, First Respondent has not provided any evidence as to its relations with Tradenames and with Second Respondent. It would not be unusual to expect a proxy service provider to limit its liability for the actions of the beneficial registrant in respect of the Domain Name, otherwise any aggrieved third party would keep the proxy liable for such actions, as it is the face of the real registrant. Not having provided evidence of such exclusion of liability, the Panel is prepared to accept that such does not exist, and the First Respondent is a proper party to be kept liable in respect of the use of the Domain Name.
On the balance, the Panel is inclined to accept that Respondents are trying to evade the application of the Policy by attempting to keep unclear their actual addresses and what has actually happened, and by attempting to pass to another party the liability for the actions contended by Complainant. Respondents have chosen not to disclose their real relations, and are either acting in concert in relation to the Domain Name so that to put it in the safe haven of a “good faith” party, or they are actually only different faces of one and the same person. To the Panel’s view, this justifies the conclusion that the responsibility of each Respondent for the registration and use of the Domain Name cannot be distinguished from the responsibility of the other Respondent, and their conduct should be analyzed jointly for the purposes of the Panel’s findings under the Policy.
On the basis of its findings under the issue of rights and legitimate interests, the Panel accepts that Respondents’ purposes in acquiring the Domain Name were different from those alleged in the Response. As the website at the Domain Name shows, these purposes included, inter alia, using the Domain Name in relation to Complainant’s trademarked product “Fitline”.
As discussed in respect of the issue of rights and legitimate interests, the Panel has come to the conclusion that Second Respondent’s allegations ware in all probability nothing more than a device to defeat this Complaint. That being the Panel’s view, inevitably the conclusion has to be that Respondents acquired the Domain Name for an abusive purpose, a purpose to which Respondents are not prepared to admit in the context of this administrative procedure.
In all likelihood, Respondents acquired the Domain Name with knowledge of Complainant and without having rights or legitimate interests in the Domain Name. This registration was made for commercial purposes, including the offering of different goods and services, among them, and without authorization, Complainant’s trademarked product “Fitline”. In the Panel’s view and in lack of any evidence to the contrary, such purposes cannot be regarded as bona fide. Respondents’ intentions appear to have been to extract certain commercial gain through attracting Internet users to the website at the Domain Name by creating a likelihood of confusion with Complainant and by free-riding on its goodwill.
Therefore, the Panel finds that Respondents have acted in bad faith in acquiring and using the Domain Name.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <pminternational.com> be transferred to the Complainant.
Dated: January 30, 2008